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Consequences of non-use of a trademark

May 5, 2020

The latest reform of the Trademark Act by RD 23/2018 introduced several new features, among which the effective use of the trademark and thus the negative consequences for its owner in the case of failure to provide evidence of use, stands out.

According to Article 39 of the Law, the consequences may range from the rejection of an opposition against a new trademark application, to a declaration of revocation of your own trademark, as well as the rejection of an application for the declaration of invalidity of a trademark on the grounds of an earlier trademark.

In the development of these legal amendments, the Spanish Patent and Trademark Office has recently implemented the aforementioned requirement of proof of use for trademarks that serve as a basis for opposition proceedings against new registrations which are potentially detrimental to the owner of prior trademarks.

During opposition proceedings, the applicant of the contested trademark may require proof of effective use in the market of the trademark on which the opposition is based given the trademark has been registered for 5 years or over. Failure to prove use would result in the rejection of the opposition and consequently in the granting of the contested trademark.

In this context, it becomes even more important the owners of registered trademarks adopt specific measures to ensure that the use they are making of their trademarks corresponds to their current registrations. Therefore, if the logo or the protected goods and/or services have undergone any substantial variation from what was registered, they must update their protection.

Since ensuring effective legal protection of distinctive signs goes beyond the mere filing of an application with the competent registry, we encourage you to contact us at marques@ponti.pro or to email your contact person at PONTI to solve any doubts you may have and to check the current status of your registered trademarks.

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